To: | nuun & company, Inc. (pctrademarks@perkinscoie.com) |
Subject: | U.S. Trademark Application Serial No. 88978119 - NUUN - 72613-4000 |
Sent: | June 22, 2020 10:22:25 AM |
Sent As: | ecom110@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88978119
Mark: NUUN
|
|
Correspondence Address:
|
|
Applicant: nuun & company, Inc.
|
|
Reference/Docket No. 72613-4000
Correspondence Email Address: |
|
NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: June 22, 2020
The examining attorney has received and reviewed the applicant’s Amendment to Allege Use filed on May 20, 2020.
Registration Refused – Trademark Act Sections 1, 2 and 45 – Ornamental Use
Registration is refused because the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of the goods and, thus, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454 (TTAB 1987); TMEP §§904.07(b), 1202.03 et seq.
Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would likely regard it as a source-indicator for the goods. See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1202. The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a trademark. In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998).
In this case, the mark NUUN as shown on the goods would be perceived as merely a decorative or ornamental feature of the wristbands because of its large size relative to the wristbands and its location on the wristbands. The applied-for mark would be perceived by consumers as having little or no particular source-identifying significance. Acceptable specimens for goods include packaging, a tag or a label bearing the mark. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).
In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use) and (b) shows proper trademark use for each international class identified in the application or amendment to allege use.
(2) Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators.
(3) Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark has allowed consumers now directly to associate the mark with applicant as the source of the goods.
(4) Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.
(5) Amend the filing basis to intent to use under Section 1(b). This option will later necessitate additional fee(s) and filing requirements.
For an overview of the response options above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, see the Ornamental Refusal webpage.
How to respond. Click to file a response to this nonfinal Office action.
/Jessica Ellinger Fathy/
Trademark Examining Attorney
Law Office 110
U.S. Patent and Trademark Office
(571) 272-6582
jessica.fathy@uspto.gov
RESPONSE GUIDANCE